No. 1047.
Mr. Bayard to Mr. Frey.

Sir: Mr. Kloss’ note of the 13th of September last, in which he asks this Department to furnish your legation as precise explanation as possible concerning the extent of the constitutional reservation made by the American representatives at the Paris conferences of 1880 and 1883, concerning the protection of industrial property, was duly received.

The subject to which these inquiries relate is one of great importance to the industry of this country as well as of Europe, and I am fully sensible of the desirability of furnishing to all persons interested precise explanations of the extent of the constitutional reservations under which this Government necessarily acts in the matter of trade-marks.

The Government of the Swiss Confederation being charged, under article 13 of the treaty of March 20, 1883, with the supervision of the Bureau of the International Union for the Protection of Industrial Property, is especially entitled to be placed in full possession of the precise legal status of this question.

I have therefore given the subject the fullest consideration, and have examined with attention the legislation and the reported decisions of the courts of the United States and of the several States, in the hope of being able to address to you an answer which should be a complete and authoritative exposition of the rights of persons who may register trade-marks in accordance with the provisions of the treaty already referred to, and of the statutes of the United States. The result of this investigation has, however, been such as to convince me that the precise extent of the authority of Congress to deal with the registration and protection of trade-marks, and the precise effect of the statutes enacted by that body, are by no means free from doubt, and upon mature deliberation [Page 1541] I have decided to refrain from expressing my individual views upon a subject which has not yet been passed upon in all its aspects by the judicial branch of this Government.

The Constitution of the United States prescribes a very distinct separation between the functions of the legislative, executive, and judicial branches of the Government, each of which is, in its appropriate sphere, independent of the others. It is for the executive branch to carry out the laws which Congress may in its wisdom see fit to enact. In the performance of this duty the Department of the Interior has been engaged, since the enactment of the statutes already referred to, in the registration and protection of trade-marks in the manner prescribed by the laws, and it has had occasion, as I am informed, to register a very large number of trade-marks from citizens and aliens alike, to the great benefit, probably, of persons engaged in commerce. But, nevertheless, any person, a citizen or a foreigner, may at any time, if he feels himself aggrieved by the operation of these Jaws, invite a decision of the question whether in their enactment the legislative branch had not exceeded the powers conferred upon it by the Constitution. That question is one which is not within the competence of the Executive to decide. When it arises it must be passed upon by the appropriate tribunals and, in the last resort, by the Supreme Court of the United States.

With the decisions of that high tribunal already pronounced you are perfectly familiar, but I may invite your attention to the fact that in passing upon the validity of the act of Congress of 1870, the Supreme Court, in 1879, took pains to state that it left untouched “the whole question of the treaty-making power of the General Government over trade-marks, and the duty of Congress to pass any laws necessary to carry such treaties into effect.”

Since 1879 the court has not, so far as I am aware, been called on to express any further opinion on the subject. What may be its decision upon the points suggested by the communication of Mr. Kloss it is not proper for me to predict. My own opinion, should I undertake to give it, would not in any respect affect the deliberations of the court.

At the same time such a statement might naturally be regarded as possessing an official sanction which, under the Constitution of the United States, could not properly attach to it.

These considerations, which your long and intimate acquaintance with the institutions of this country will enable you to appreciate in their full force, have thus led me to the conclusion that it would be undesirable at this time to attempt to furnish you with precise explanations concerning the extent of the constitutional reservations made by the representatives of this Government at the Paris Conferences of 1880 and 1883, touching the protection of industrial property.

In communicating to you this conclusion, I beg that you will express to the Government you so worthily represent my expression of regret that the peculiar relations of the Federal Government to the several States and the limitations imposed by the Constitution of the United States upon the several branches of the Government, forbid my conforming to the legitimate desire of the Government of the Swiss Confederation for an authoritative statement of the present condition of the law.

Accept, etc.,

T. F. Bayard.